1. The trademark registration process through the USPTO involves “examination” of the applied-for “mark” to determine whether or not it is eligible for registration. A number of factors are considered by the Examining Attorney, including whether or not the mark is “confusingly similar” to another mark that was either filed or registered prior to the applied-for mark.

2. An Office Action issued by the Examining Attorney will communicate the initial determination by the Trademark Office. The Applicant will have six months to respond with arguments and evidence opposing the Examining Attorney’s position.

3. One way to overcome a finding of “likelihood of confusion” with a prior application/registration is to obtain a consent agreement from the prior registrant. By way of such an agreement, the prior applicant/registrant gives consent to the current applicant to register their mark. The Examining Attorney must accept such a consent agreement to overcome the likelihood of confusion refusal.

Conclusion: The NHL has many options still available to it – this is just the first volley by the USPTO. We would expect that the NHL will attempt to reach an agreement with the College of Saint Rose whereby the College will consent to the NHL’s registration of the “Golden Knights'” mark. We predict that the College, in exchange for undisclosed financial terms, will consent to the NHL’s registration, because any confusion between the NHL’s new team and the College will only improve the College’s visibility, while also establishing another revenue stream for the College.

Associated Press 5:48 PM PT, 12/9/2016

LAS VEGAS — The U.S. Patent and Trademark Office has denied the Vegas Golden Knights’ trademark application a little more than two weeks after the new NHL franchise unveiled its name and logo.

The office on Wednesday cited potential confusion with the team name for the College of Saint Rose in New York, which is also the Golden Knights. The Las Vegas franchise is set to take the ice next season.

NHL deputy commissioner Bill Daly said the league will formally respond by a June 7 deadline outlining why it believes the name should be registered “in co-existence” with that of Saint Rose “just as a number of other nicknames currently co-exist in professional and college sports (particularly where there is no overlap as to the sport for which the nickname is being used).”

“We consider this a routine matter, and it is not our intention to reconsider the name or logo of this franchise,” Daly said. “We fully intend to proceed as originally planned, relying on our common law trademark rights as well as our state trademark registrations while we work through the process of addressing the question raised in the federal applications.”

David Alexander, assistant athletic director for communications at the College of Saint Rose, said the school’s trademark was registered in 2004. He declined to say how the college would react if the NHL franchise continued to pursue its application to use the nickname.

“It’s only the first period, I don’t want to get too far ahead,” Alexander said.

Saint Rose does not have a hockey team.

“We have a registered trademark. We love the name,” Alexander said. “Fifteen years ago, we redesigned the logo and wanted a trademark to specifically protect our brand. The logo represents the spirit of the school.”